Wednesday, August 31, 2011

The district court’s holding of ineligibility for patenting under §101 is reversed as to the claims of the ’139 and ’739 patents, and affirmed as to the ’283 patent. The judgment of non-infringement is affirmed as to Merck, and is vacated as to Biogen and GlaxoSmithKline insofar as based on §271(e)(1).

Of history in the case:

On the initial appeal of that ruling, this court applied its en banc decision of In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), held that the Classen methods are not associated with a machine and do not transform matter, and affirmed the district court’s holding of ineligibility under §101 on that ground. Now upon the Supreme Court’s ruling in Bilski v. Kappos that the machine-or-transformation test is not the sole standard of eligibility for patenting, we again review the district court’s decision, with the benefit of this court’s analyses of eligibility in Research Corporation Technolo- gies, Inc. v. Microsoft Corporation, 627 F.3d 859 (Fed. Cir. 2010); Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347 (Fed. Cir. 2010), cert. granted, _ S. Ct. _ , 2011 WL 973139 (June 20, 2011); and Associa- tion for Molecular Pathology v. U.S. Patent & Trademark Office, _ F.3d _, 2011 WL 3211513 (Fed. Cir. July 29, 2011).

Of mental steps:

The district court held that none of the Classen claims meets the threshold under §101 of eligibility for patent- ing, reasoning that the method claimed in all three pat- ents includes the mental step of reviewing the relevant literature to determine the lower-risk immunization schedule. The district court did not discuss whether the claims were anticipated or obvious in view of the prior art, and it appears that this aspect was not raised, in the district court, in the context of §101. However, precedent has recognized that the presence of a mental step is not of itself fatal to §101 eligibility, and that the “infinite vari- ety” of mental and physical activity negates application of a rigid rule of ineligibility. See Application of Prater, 415 F.2d 1393, 1402 n.22 (CCPA 1969).

Of permissive approach:

The distinction between a concrete, physical step of a process claim, as compared with data gathering or insig- nificant extra-solution activity, warrants specific consid- eration in the context of evolving technologies, for “Congress took [a] permissive approach to patent eligibil- ity to ensure that ‘ingenuity should receive a liberal encouragement.’” Bilski, 130 S. Ct. at 3225 (quoting Chakrabarty, 447 U.S. at 308, in turn quoting Thomas Jefferson). The Bilski Court emphasized the “expansive terms” of §101 as evidence of the intent “that the patent laws would be given wide scope,” id. (quoting Chakra- barty, 447 U.S. at 308). Thus the Court rejected the Federal Circuit’s proposal in Bilski that the “machine-or- transformation” test should be the exclusive test for patent-eligible processes, and emphasized the classical “three specific exceptions to §101’s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract ideas.’” Id. (quoting Chakrabarty, 447 U.S. at 309). The Court reaffirmed the proposition that “the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of [a] formula to a particular technological environment’ or adding ‘insignificant postsolution activity.’” Id. at 3230 (quoting Diehr, 450 U.S. at 191-92).

Footnote 2:

The dissent argues that there is “no distinction” between the claims of the ’283 patent and the claims of the ’139 and ’739 patents. The patents, which were separately filed after the patent examiner required restriction because “the inventions are distinct,” distinguish the ’283 method where, according to Classen, a person simply reviews known knowledge on immunization effects, from the ’139/’739 methods that require physical immunization based on that review. Even if the question as to the ’139 and ’739 patents were deemed to be close, the ’139/’739 method of immunizing on the low-risk schedule determined by the ’283 method of reading the literature, may be generously viewed as traversing the boundary into eligibility for substantive review.

And note

All three Classen patents contain claims whose breadth is not of “staggering” character. Our holding is not that any claim is “patentable,” whatever its breadth, but that the claims are eligible at the threshold for review for substantive patentability.

And, we have the maxim: that which infringes if later anticipates if earlier-->

the general rule that the denial of a summary judgment motion is not appealable. Kendall v. City of Chesapeake, Va., 174 F.3d 437, 443-44 (4th Cir. 1999).

Chief Judge Rader added some "additional views" which began:

In the last several years, this court has confronted a rising number of challenges under 35 U.S.C. § 101. The language of § 101 is very broad. Nevertheless, litigants continue to urge this court to impose limitations not present in the statute. Subject matter eligibility under section 101 has become the “substantive due process” of patent law – except that reading non-procedural require- ments into the constitutional word “process” has more historical and contextual support than reading abstract- ness into the statutory word “process” because Title 35 already contains ample protections against vague claims. See 35 U.S.C. § 112. Indeed it is difficult to “invent” any category of subject matter that does not fit within the four classes acknowledged by Title 35: process, machine, [article of] manufacture, or composition of matter. This court should decline to accept invitations to restrict subject matter eligibility. In order to highlight some public policy reasons that the statute places few, if any, limits on subject matter eligibility, these additional views are offered.

Judge Moore dissented:

Respectfully, I must dissent from the majority opinion on several grounds. I believe that the claims at issue are to a fundamental scientific principle so basic and abstract as to be unpatentable subject matter and therefore I would affirm the district court’s grant of summary judgment of invalidity under § 101. Classen claimed a monopoly over the scientific method itself. I also dissent from the majority’s refusal to reach Merck’s appeal of the denial of its motion for summary judgment of anticipation. Instead, I would affirm because the district court properly concluded that summary judgment was improper where Merck failed to offer any proof that its prior use included one of the claim elements. Finally, I dissent from the majority’s analysis of infringe- ment and its construction of the safe harbor provision under § 271(e)(1) which is contrary to the plain language of the statute and clear Supreme Court guidance.

From a post at AppleInsider: A recent valuation of Kodak's digital imaging IP collection estimated it at $3 billion, more than five times the company's market cap at the time. Earlier this month, one investment bank called the company "the lowest hanging fruit out there."

In Hamilton Township, around 100 residents along the Assunpink Creek evacuated their houses as flood levels rose above basement levels and water streamed through first floors. Mayor John Bencivengo estimated 10 people had been rescued by rowboats.

The tops of mailboxes and stop signs stood like flood gauges in the water. Some residents went fishing in the new lakes that had formed in place of their lawns. "I need a net," announced Victor Metelow, 69, as he spotted a fish darting by his porch.

But humor concealed devastation: Mr. Metelow, a retired machinist, made honey from 4,000 bees on his property.

A member of the Princeton First Aid and Rescue Squad (PFARS) remains in critical condition in the hospital Sunday. A report from Gov. Chris Christie stating a Princeton firefighter died during a rescue operation early this morning is false.

PFRAS was dispatched after a report of a stranded motor vehicle in flood waters near Rosedale Road by Greenway Meadows Park at 4:35 a.m.

"(The rescuers) had a reason to believe there may still have been an occupant in the vehicle," said Greg Paulson, deputy director of the 75-member volunteer squad. "Two swiftwater rescue technicians entered the water and began to move toward the vehicle. As they were moving forward, they were assessing the condition of the current and they decided the current was too strong for them to continue safely."

The rescuers turned around and one of them took a fall, said Mr. Paulson.

"The way it works with flood rescue is two rescuers are tied together with a tether line anchored on the shore, so when the one rescuer fell, it made the other one fall," he explained. "They were swept by the current into an area of trees and during that process they became detached from their tether line. One of the two rescuers was able to self-rescue to a tree that was there, the other rescuer was carried down by the current where he was pulled out by our backup rescue team that was waiting down current."

A backup team is standard practice for such swiftwater rescue, Mr. Paulson said.

Prior to the Poshard plagiarism matter at SIU, there was the Wendler self-plagiarism matter [Walter Wendler copied material he created while at Texas A&M into a proposal while he was employed at SIU ]. SIU gave self-plagiarism a pass.

Now, iParadigms has put out a white paper, "The Ethics of Self-Plagiarism." The paper notes the typical defense: Writers often maintain that because they are the authors, they can use the work again as they wish; they can't really plagiarize themselves because they are not taking any words or ideas from someone else.

As to the paper: http://www.ithenticate.com/self-plagiarism-free-white-paper

Teva, the world's largest generic drug company, won a court battle in SDNY in its role as a proprietary drug company making Copaxone, against Novartis AG's Sandoz unit, Momenta Pharmaceuticals Inc., Mylan Inc., and Natco Pharma Ltd. Claim constructions favorable to Teva were accepted. On Aug. 29, U.S. District Judge Barbara Jones dismissed Mylan’s claim that Teva’s patent for the drug was invalid. Trial will begin 7 Sept 11. Copaxone is the top MS drug in the world by revenue.

The Sandoz case is Teva Phamaceutical Industries Ltd. v. Sandoz Inc., 08-7611, U.S. District Court, Southern District of New York (Manhattan). The Mylan case is Teva Pharmaceuticals Industries Ltd. v. Mylan Inc., 09-8824, U.S. District Court, Southern District of New York (Manhattan).

Monday, August 29, 2011

On this appeal from a PTO rejection, the court has ap- plied a new ground of rejection—which the court calls “indefiniteness”—and issued a final judgment on that ground, although the applicant has had no opportunity to respond to the rejection. The panel majority’s ab initio decision is improper, for the Federal Circuit has issued a final judgment on an issue that was not decided by the Board, contrary to 35 U.S.C. §144, which authorizes the Federal Circuit to “review the decision from which an appeal is taken on the record.”

The PTO had based its judgment of unpatentability on “anticipation,” a ground on which my colleagues announce they shall remain silent, although it is the only issue on appeal, as required by Securities & Exchange Commission v. Chenery Corporation, 318 U.S. 80, 94 (1943) (“The grounds upon which an administrative action must be judged are those upon which the record discloses that its action was based.”); Securities & Exchange Commission v. Chenery Corporation, 332 U.S. 194, 196 (1947) (“[A] reviewing court, in dealing with a determination or judgment which an administrative agency alone is authorized to make, must judge the propriety of such action solely by the grounds invoked by the agency.“). Although the court remands to the PTO, in order the give the applicant the opportunity (indeed the right) to amend the claims or submit new evi- dence in light of the rejection, the applicant has had no opportunity to argue the merits of the definiteness rejection; the Federal Circuit’s judgment is final and binds the Board on remand. Thus the applicant cannot argue, or submit evidence to show that a person of ordinary skill in computer programming would not find the claims indefinite. While the court cites 37 C.F.R. §41.50(b), which instructs the Board to remand after it raises a new ground of rejection, this court has finally decided that the claims as written are unpatentable on this ground, placing a heavy appellate thumb on the scale of remand. Remanding, as here, to the Board to allow the applicant to conform to the court’s ad- verse final judgment on indefiniteness is far different from remanding to the Board to consider claim definiteness in the first instance. I must, respectfully, dissent.

AND

The Board found the claims “anticipated,” and although my colleagues acknowledge that “a claim cannot be both indefinite and anticipated,” Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010), my colleagues resolve this conflict by declining to discuss it, stating that they “do[] not reach the ground relied on by the Board,” Maj. Op. at 10, defying the requirements for appellate review of agency action. See Chenery, 318 U.S. at 94 (“[A]n adminis- trative order cannot be upheld unless the grounds upon which the agency acted in exercising its powers were those upon which its action can be sustained.”); Chenery, 332 U.S. at 196 (“If those grounds are inadequate or improper, the court is powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.”); Bowman Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 419 U.S. 281, 285-86 (1974) (courts “may not supply a reasoned basis for the agency’s action that the agency itself has not given”).

AND

Aoyama has had no opportunity to develop a record on this aspect, for it was not raised during examination, and was not a ground of rejection by the Board. In Biomedino, LLC v. Waters Technologies Corporation, 490 F.3d 946, 950 (Fed. Cir. 2007) the court stated that “[w]hile the specifica- tion must contain structure linked to claimed means, this is not a high bar.”

An AP story detailing offers from private collectors to buy an antique fortune-telling machine now owned by Montana ends with the paragraph:

"A lot of these collectors, they come and say the same thing: 'Why is this out in the public? Why don't you just take the money and have a collector restore it the way it should be restored and have it in his private collection?' Well, nobody would ever see it" said Peterson, whose position also was eliminated in the cutbacks.

This is part of the calculus of patent law rarely discussed by patent law academics: the benefit to the public of "public disclosure" of ideas. Patents are "patent", as distinct from "latent." They are there for all to see and to learn from.

Apple's US 20110208524: USER PROFILING FOR VOICE INPUT PROCESSING

The first claim states:

A method for processing a voice input, comprising:
receiving a voice input;
identifying a user providing the voice input;
identifying a subset of library words associated with the identified user; and
processing the received voice input using the identified subset.

Paragraph [0009]] states: In response to identifying the words of a particular voice input, the electronic device can identify one or more instructions that correspond to the voice input. The instructions can then be passed on to appropriate circuitry of the electronic device for the device to perform an operation corresponding to the instruction. In some embodiments, the instruction can identify a particular device operation and a variable or argument characterizing the operation.

Apple has been accused of not being “trustworthy” after a Judge in the Australian Federal Court was told that Apple chose midnight on a Sunday night to dump two new patent claims on the Korean Company who is in a battle with the US Company over the design of their Samsung Galaxy Tab 10.1.

At a second hearing today before Justice Amanda Bennett in the Federal Court, Counsel for Samsung David Cattern, told the Court that Samsung had received two new Apple patents at "midnight on Sunday night" hours before a hearing at 9.15am today in the Federal Court.

The Court was told that Apple could not be trusted and that there was a likely proposition that they would try to produce other new patents prior to a full hearing on the 26th of September.

Shortly afterwards Justice Bennett said that she was not happy with the way in which several Companies had in the past handed up written patent submissions, she said that she wanted to take "Oral" submissions from the patent inventors, a move that could force Apple to produce either via video link or live in Court senior engineering executives and inventors responsible for the design and the technology built into Apple iPads and iPhones.

The Judge who is an experience technology advocate having handled several high profile technology cases told both parties that there would be limited cross examination of the patent developers as "time was of the essence" in the case.
During the hearing Samsung agreed to not to sell or advertise the Galaxy Tab 10.1 before September 30.

Both parties have been told that they have up until Friday to file their statement of claims. She also ordered Apple to clearly identify which patents they allege Samsung has breached.

An article on the smart phone patent wars includes the text: Truth be told, I’m not even sure a regular lawyer could walk most people through the mess, I think it requires special patent lawyers. The potential for misinformation or misunderstand is so significant, I scored the web for some visuals of the lawsuits that are currently going on. One notes one must be a patent lawyer (or agent) to prosecute a patent application before the USPTO, but any lawyer can litigate a patent case. Sad, but true.

The article by Russell Holly has an interesting diagram showing the connectedness of the various patent infringement suits.

“This latest report OLED lighting: A review of the patent landscape identifies more than 2,760 patents focused on white OLED technology for lighting applications, and is an essential resource for developing a company’s technology development and roadmap”, said Craig Cruickshank, lead analyst cintelliq Limited. Craig added, “As OLED lighting continues to gain market adoption this too will also be a primary driver for further innovation within the industry leading to increases in patent filings as companies seek to secure exclusive technology domains.”

Ruby Tuesday, which grew revenue in its fiscal 2011 for the first time in four years, is licensing and opening stores from Lime Fresh Mexican Grill, a Florida chain that looks a lot like a certain fast-casual competitor. Lime Fresh restaurants feature hammered copper countertops and earth-toned walls and sell the usual Mexican fare—guacamole, quesadillas, burritos—made from "humanely raised" food. The chain "plays on sustainably raised, better quality, more natural ingredients—not too dissimilar to what Chipotle has done," says Robert Derrington, a restaurant analyst at investment firm Morgan Keegan. "It's clearly positioned towards a younger demographic."

On August 20, the Economist had a post which contained a reference to the Bessen/Meurer work:

In recent years, however, the patent system has been stifling innovation rather than encouraging it. A study in 2008 found that American public companies’ total profits from patents (excluding pharmaceuticals) in 1999 were about $4 billion—but that the associated litigation costs were $14 billion. Such costs are behind the Motorola bid: Google, previously sceptical about patents, is caught up in a tangle of lawsuits relating to smartphones and wants Motorola’s huge portfolio to strengthen its negotiating position (see article).

Of course, the Bessen/Meurer work wasn't right in the first place.

Separate link:
http://www.economist.com/node/21526385

**The Economist opinion piece made several suggestions:

patents in fields where innovation moves fast and is relatively cheap—like computing—should have shorter terms than those in areas where it is slower and more expensive—like pharmaceuticals.

the bar for obtaining a patent, particularly for software or business methods, should be much higher

there should be greater disclosure requirements of the ownership of patent portfolios, and patent cases should be heard by specialised courts

CBS Sunday Morning on August 28, 2011 not broadcast by KYW

Sadly, the Philadelphia CBS affiliate (KYW) did not broadcast "Sunday Morning" on August 28, 2011, instead opting for local coverage of damage from Hurricane Irene.

In terms of IP relevance, KYW had footage presented by Dray Clark of some teenagers attempting to raft down Main Street in Manayunk. The clip showed Philly police arresting and handcuffing the teenagers. When asked what the charge was: "lack of common sense." A new variant of KSR v. Teleflex? Resident Bob Beringer was interviewed and pointed out flooding was likely to be worse than Floyd. At 9:36am, the clip was re-shown, with Dray Clark saying: of course, there's no law for not using common sense. The police will likely release the boys. Clark reiterated: The officer said: lack of common sense, but of course there's no law. Dray noted an officer from the marine unit said: "What? they can't do that."

Fortunately for the Jersey shore, the prevailing wind was coming from the west, so the feared tidal surge did not happen.

SO FAR IN AUGUST 2011, PHILLY HAS HAD 19.31 INCHES OF RAIN.

In Atlantic City, the casinos shut down.

Of the Sunday Morning not shown in Philly, they were broadcasting the "latest developments on Hurricane Irene" and the history of hurricanes. The show discusses the bombing of Sterling Hall at the University of Wisconsin campus. Recycled stories include a piece on movie location scouts and on "Dog Whisperer" Cesar Milan.

**The "state of emergency" declaration in Philly will be lifted at noon on August 28, 2011. Mayor Nutter asked residents to use common sense. The regional rail system around Philly will not be operational for some time; about half the regional rail system is powered by Amtrak. Philly International Airport will ramp up around 4pm on August 28.

New York was this morning in the eye of the storm as hurricane Irene forced an unprecedented shutdown of the city, forcing hundreds of thousands to flee in terror, ripping trees from the ground and leaving millions without power.
Manhattan was turned into a ghost town as the streets were deserted after the hurricane smashed its way up the East Coast before descending on the Big Apple.
Heavy rains raised fears of severe flooding and 200,000 New Yorkers were left without power, mainly residents on Staten Island, Queens and the outer suburbs as hurricane Irene ripped through the city.
Experts said a storm surge on the fringes of Lower Manhattan could send seawater into the maze of underground vaults that hold the city's cables and pipes, knocking out power to thousands and crippling Wall Street, Ground Zero and the luxury high-rise apartments of Battery Park City. Tornadoes were also a possibility.

Saturday, August 27, 2011

The Infernos at Duke Island

The Infernos appearing at Duke Island Park at a make-up concert on Wednesday, August 24, 2011. One of the Infernos was once with the Duprees.

On August 24, it was announced that Neil and the Diamonds (a tribute band) AND New Riders of the Purple Sage would both appear on Sunday, August 28. In view of the rain coming down from Hurricane Irene, this might appear unlikely.

Within SomervilleToday: The Somerset County Park Commission has announced that all park facilities will be closed on Sunday, August 28, 2011 due to the predicted visit from Hurricane Irene.

Gevo's inter partes re-exam request as to US 7,851,188

Gevo's request for inter partes re-examination of Butamax's US patent 7,851,188 is 96 pages long and gives background on twelve (12) substantial new questions of patentability ["SNQ"]. All twelve SNQs relate to obviousness under 35 USC 103.

The principal reference in SNQ 1 is Yocum, published US application 2004/0146996. Another reference is a Ph.D. thesis by one Smit from 2004 [ "Formation of Amino Acid Derived Cheese Flavour Compounds" ] {There is some odd spelling on page 20 of the re-exam request relating to the Smit reference: "catolaging"?]. SNQ 1 involves the application of Yocum, Smit, and Hansen (Hansen is a chapter from a 2003 book), none of which was of record during the prosecution of the '188 patent.

Another reference is Nakamura's US 6,013,494 on producing 1,3 propanediol by recombinant microorganisms. Another reference is a screen capture from the ExPASy Proteomics Server. And, Gevo did cite the 3rd edition of Lehninger Principles of Biochemistry.

***UPDATE. Oct. 14, 2011

Gevo's first inter partes request is 95/001,718 filed on 08-18-2011. Gevo made another request on a different Butamax patent, 95/001,735 filed on 09-01-2011, relating to US 7993889 .

The first SNQ in re-exam '735 is for anticipation of claims 1, 3, 11, and 16-19 based on Larroy, Chemico-Biological Interactions (2003), which gives details of the route from pyruvate to isobutanol. Another reference is Bekkaoui, Current Genetics (1993). Another reference is Yocum's US 20040146996.

One notes that if one fails in an inter partes re-exam, there are estoppel provisions which prevent use of the re-exam arguments in a later litigation in district court.

Thursday, August 25, 2011

Accordingly, this court affirms the district court’s grant of summary judgment of nonobviousness in favor of Unigene, affirms the district court’s denial of summary judgment of obviousness, affirms the district court’s denial of Apotex’s crime-fraud motion, and affirms the district court’s dismissal of Apotex’s new claims and defenses.

Yes, part of the case involved "crime-fraud":

In September 2007, during fact discovery, Apotex moved to breach Unigene’s attorney-client privilege under the crime-fraud exception. In support of these allega- tions, Apotex referred to Unigene’s alleged failure to disclose U.S. Patent No. 5,912,014 (“’014 patent”) to the U.S. Patent and Trademark Office (“Patent Office”) and to errors in Table 3 of the ’392 patent, the same conduct upon which Apotex premised some of its inequitable conduct claims at issue in this appeal.

As to the error in the '392 patent:

The error on the top axis, characterized as clearly typographical in nature by the district court, labels a column “20 mM” instead of “25 mM.” Second, the point of Apotex’s allegations, a data point on the table reads 20 percent instead of the 52 percent actually meas- ured. The column containing the second error shows that a salmon calcitonin solution with 100 mM of citric acid degrades over time, as the percentages of recovered calcitonin decrease from 100 percent to 52 percent over time. Whether the 15 day measurement is 20 percent or 52 percent, the recovery is still below the 66 percent recovered after 9 days.

AND

The district court also found that the errors in Table 3 of the ’392 patent were immaterial. Id. at 14-15. The district court found the corrected version of the table consistent with Unigene’s assertions at the Patent Office. Id. at 16. The district court concluded that the errors were not material with respect to patentability or common law fraud. Id. The district court also determined that evidence of Stern’s submission of a second declaration to clarify errors in Table 3 lacked deceptive intent, making that conduct insufficient to support an assertion of com- mon law fraud. Id. at 17-18.

The CAFC noted:

This court applies its own law to review a district court’s application of the crime-fraud exception to the attorney-client privilege. In re Spalding Sports World- wide, Inc., 203 F.3d 800 (Fed. Cir. 2000). This court reviews a district court’s determination of material pro- tected by the attorney-client privilege for an abuse of discretion. Apotex Corp. v. Merck & Co., 507 F.3d 1357, 1362 (Fed. Cir. 2007).
A party must establish Walker-Process fraud, also known as common law fraud, to successfully pierce the attorney-client privilege under the crime-fraud exception. See Walker-Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 177 (1965). A finding of common law fraud in the patent context “must be based on independ- ent and clear evidence of deceptive intent together with a clear showing of reliance.” Spalding, 203 F.3d at 803; see Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1070 (Fed. Cir. 1998) (holding that both fraudulent misrepresentations and omissions can support a finding of common law fraud). Such independent and clear evidence must establish a prima facie case of fraud, which is “gen- erally held not to exist” unless the accusing party can show:
(1) a representation of material fact, (2) the falsity of that representation, (3) the intent to deceive or, at least, a state of mind so reckless as to the consequences that it is held to the equivalent of intent (scienter), (4) a justifiable reliance upon the misrepresentation by the party de- ceived which induces him to act thereon, and (5) injury to the party deceived as a result of his reliance on the misrepresen- tation
Spalding Sports, 203 F.3d at 807 (citing Nobelpharma, 141 F.3d at 1069-70). This court need only examine Apotex’s proffered evidence of intent to uphold the district court’s refusal to invoke the crime-fraud exception.

The CAFC found no (bad) intent by Unigene:

The record does not show clear evidence of intent for either of the alleged fraudulent acts by Unigene. As noted by the district court, the record contains only an essentially “unsupported allegation” that Dr. Stern intentionally left the ’014 patent off of the initial information disclosure statement of the ’392 patent. Crime-Fraud Opinion, at 12. The second allegation of fraud rests on a similarly flimsy foundation.
In the first place, the typographical error in Table 3 of the ’392 patent, corrected on reissue, does not call for the extreme remedy of piercing the attorney-client privilege. The district court found the “evidence tend[ed] to prove that this error was an honest mistake, though perhaps a careless one.” Id. at 16. Indeed, Dr. Stern submitted a declaration during the reissue proceedings to explain the error in Table 3. Further, as the trial court found, the error itself did not alter the arguments made by Unigene to the PTO. Accordingly, the district court concluded that the record did not show any evidence of intent to deceive the Patent Office. Id. at 18.

As to the issue of obviousness:

In considering forty-plus pieces of prior art submitted by Apotex (also considered by the Patent Office during prosecution of the ’812E patent), the district court found that no prior art teaches using 20 mM citric acid to achieve “both shelf stability and enhanced bioavailability” in a nasal salmon calcitonin formulation. Summary Judgment Opinion at 15.

The CAFC noted:

Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. at 421 (describing that a person of ordinary skill possesses “ordinary creativity, [and is] not an automaton”); see also Bayer Schering Pharm. AG v. Barr Labs., Inc., 575 F.3d 1341, 1350 (Fed. Cir. 2009) (Newman, J., dissenting) (“The statutory criterion is whether the invention would have been obvious to persons of ordinary skill at the time of the invention, not whether it is sufficiently simple to appear obvious to judges after the discovery is finally made . . . .”).

A person of ordinary skill at the time of the invention interprets the prior art using common sense and appro- priate perspective. KSR, 550 U.S. at 421. In KSR the Supreme Court observed:

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordi- nary skill and common sense.
Id. Accordingly, when design need and market pressure may dictate a commonsensical path using a finite number of identified predictable solutions to one of ordinary skill, deviations from that path are likely products of innova- tion.
This court has observed that teachings from prior art, suggestions beyond the literal teachings of those art references, or even motivations from the store of common knowledge of one of ordinary skill in the art field (“TSM”)—flexibly viewed and applied—provide the sources of evidence that an ordinary skilled artisan might have found and combined at the time of the invention. Ortho-McNeil, 520 F.3d at 1364-65 (“[A] flexible TSM test remains the primary guarantor against a non-statutory hindsight analysis . . . .”); see also KSR, 550 U.S. at 419 (“The obviousness analysis cannot be confined by a formalistic conception of the words, teachings, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.”).

AND

To render a claim obvious, prior art cannot be “vague” and must collectively, although not explicitly, guide an artisan of ordinary skill towards a particular solution. Bayer Schering., 575 F.3d at 1347. Indeed, “most inven- tions that are obvious were also obvious to try,” id., and a combination is only obvious to try if a person of ordinary skill has “a good reason to pursue the known options.” KSR, 550 U.S. at 421. When a field is “unreduced by direction of the prior art,” and when prior art gives “no indication of which parameters were critical or no direc- tion as to which of many possible choices is likely to be successful,” an invention is not obvious to try. Bayer Schering, 575 F.3d at 1347 (citing O’Farrell, 853 F.2d at 903); see also Ortho-McNeil, 520 F.3d at 1364 (stating the number of options must be “small or easily traversed”).

In terms of the "legal value" of a Ph.D.:

The record shows that a person of ordinary skill was an individual with a masters degree in chemistry, pharma- ceutical chemistry, biochemistry, or a similar field with at least eight years of practical experience in pharmaceutical liquid dosage form development, or an individual with a Ph.D. in the same fields with at least four years of practical experience in pharmaceutical liquid dosage form development.

Peter D. Meldrum, CEO of Myriad, is quoted in the New York Times: “If I had my druthers, I would not want to go into a new market in a heavy-handed fashion, trying to enforce patents." ANDREW POLLACK gets into future challenges facing Myriad.

There is the race to the patent office theme: Ever since Myriad and its partner, the University of Utah, beat other researchers, including Professor King of the University of Washington, in identifying the BRCA1 gene in 1994, Myriad has been the target of those opposed to the patenting of genes.

AND

In 2006, Professor King and colleagues published a paper showing that Myriad’s test, known as the Comprehensive BRACAnalysis, actually failed to detect a significant number of genetic alterations in the two genes.

Sequencing of the entire human genome is available:

Some companies like Knome already offer sequencing of a person’s full genome. Prices are still high — Illumina, for instance, charges $9,500 — but are dropping rapidly. Others, like GenomeQuest, are developing software tools to analyze the genetic information.

Lawyers say it is not clear if sequencing a person’s whole genome and then providing information on mutations in the BRCA genes would violate Myriad’s patents on the isolated genes.

Wednesday, August 24, 2011

Within an article on patent applications on cloud computing, one has the text

Patent applicants can benefit from a strategy of filing multiple related applications for a cloud computing invention. Each application could be directed, for example, to a separate potential infringer. In this manner, the patent applicant can avoid drafting claims requiring dual actors for infringement and can tailor claims to each of multiple potential infringers. Moreover, if multiple potential infringers exist, it is likely that a large enough number of claims could be drafted so that it would be cost-prohibitive to include them all in a single application. Filing multiple applications will not only reduce excess claim fees, but will also prevent potential prosecution headaches down the road. For example, including a diverse claim scope in a single application increases the risk of a restriction requirement once the application is examined, which in turn can raise the cost of the patent process for the patent applicant. Accordingly, care should be given to determining the parties for which asserting the patent is the most viable and separating the claims into separate applications.

The basic fees for a utility application include the basic filing fee of $330, a utility search fee of $540, and a utility examination fee of $220. This sums to $1090. Independent claims in excess of three are $220 per claim, and claims in excess of 20 are $52. The excess claim fee for 3 independent / 17 dependent would be something like $1544, indeed in excess of $1090.

Tuesday, August 23, 2011

In 2006, Hamilton Township, New Jersey was ranked by Morgan Quitno as the eighteenth safest "city " in the United States.
On 23 August 2011, five years later, JP Morgan Chase Bank at Klockner and Whitehorse Mercerville Road, in Hamilton was robbed, the third robbery of the bank since November 2010. The bank robber shot the teller.

KYW sent a reporter to cover the bank robbery, and ended up with a story about the earthquake on August 23. See the videoclip titled NJ Residents React To Earthquake

The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of the validity of any of the interfering patents, in whole or in part. The provisions of the second paragraph of section 146 of this title shall apply to actions brought under this section.

Genetics Institute v. Novartis addressed the question of whether or not 291 applies to an expired patent.

The issue:

On May 16, 2008, Genetics sued Novartis in the United States District Court for the District of Delaware to determine priority of invention under 35 U.S.C. § 291. Genetics alleged that an interference in fact existed between the following claims: (1) claim 1 of the ’112 patent and claim 68 of the ’620 patent; (2) claim 5 of the ’112 patent and claim 74 of the ’620 patent; (3) claim 9 of the ’112 patent and claim 83 of the ’620 patent; and (4) claims 9 and 10 of the ’112 patent and claim 1 of the ’447 patent. Genetics asserted that all three patents are directed to the same subject matter, viz., truncated Factor VIII proteins lacking all or part of the B domain while retaining procoagulant activity.
Novartis moved to dismiss, arguing that the court lacked subject matter jurisdiction because the extension of the ’112 patent under 35 U.S.C. § 156 applied to fewer than all of that patent’s claims. Novartis further argued that there was no interference in fact between the asserted claims because the Novartis patents—unlike the ’112 patent—are directed to truncated Factor VIII pro- teins that preserve the functional a3 acidic region.

Of note:

Much to the contrary, “a patent does have value beyond its expiration date.” In re Morgan, 990 F.2d 1230, 1232 (Fed. Cir. 1992). For example, an expired patent may form the basis of an action for past damages subject to the six-year limitation under 35 U.S.C. § 286. See, e.g., id. (recognizing that an action for patent infringement may be filed up to six years after the patent’s expiration). There is no comparable statute providing any such rights in a disclaimed claim.
Furthermore, the expiration of the ’112 patent does not deprive this § 291 action of meaning. In Kimberly- Clark Corp. v. Procter & Gamble Distributing Co., 973 F.2d 911, 914 (Fed. Cir. 1992), in determining that juris-
diction in a § 291 action existed following the parties’ settlement of infringement liability issues, we noted in support of our holding that “a declaration of priority and the subsequent elimination of an invalid patent that claims the same subject matter as claimed in one’s patent are ‘relief’ under [§ 291].” Similar reasoning applies here. Genetics points out that the outcome of this § 291 action “will have real-world consequences,” because Genetics’ corporate parent, Wyeth, has been sued for allegedly infringing the Novartis patents in a related case in the United States District Court for the Eastern District of Texas. Pl.-Appellant’s Reply Br. at 10; see also Compl. at 1, Novartis Vaccines & Diagnostics, Inc. v. Wyeth, No. 2:08-cv-067 (E.D. Tex. Feb. 15, 2008), ECF No. 1. A determination that the ’112 patent interferes with and has priority over the Novartis patents would directly affect the outcome of that infringement suit.

The outcome:

In particular, we conclude that the expiration of the ’112 patent following the district court’s entry of final judgment did not divest our court of appellate jurisdiction; that the patent term extension of the ’112 patent applied to all of the allegedly interfering claims; and that there is no interference in fact between (1) claim 1 of the ’112 patent and claim 68 of the ’620 patent, (2) claim 5 of the ’112 patent and claim 74 of the ’620 patent, (3) claim 9 of the ’112 patent and claim 83 of the ’620 patent, and (4) claims 9 and 10 of the ’112 patent and claim 1 of the ’447 patent.

The punchline as to the parties in the case AUGUST TECHNOLOGY CORPORATION v. CAMTEK was

We conclude, however, that the district court erred in its claim construction, and vacate the district court’s judgment of infringement, its award of damages, and its grant of a permanent injunction, and remand for further proceedings consistent with this opinion.

HOWEVER, one of the more interesting pronouncements of the case, concerning an improper jury instruction on the on-sale bar, did not change the outcome as to a finding of nonobviousness. So even though Camtek's lawyers convinced the CAFC of an improper jury instruction (patterned after a model instruction of AIPLA!!! See footnote 4.), the "victory" was immaterial because it failed to invalidate the relevant claim.

The CAFC got to the issue leading to a partial vacation of the district court decision:

The dispute in this case centers around whether “a wafer” is also “a plurality of wafers.” Both parties agree that a whole wafer is typically diced into many pieces called dies,1 and that each die contains a complete functional circuit. The district court construed a wafer to be “a thin slice of semiconductor material with circuitry thereon that is ready for electrical testing, or any part thereof. However, a ‘wafer’ is not the same as a ‘die.’ A wafer is made up of multiple die[s].” J.A. 37, 132 (emphasis added). The district court explained: “wafer should be construed to include a part of a wafer. Throughout the patent, reference is made to wafers, in whole or in part.” J.A. 131. The court further explained that defining a wafer as “any portion of a wafer” does not improperly give the same meaning to “die” and “wafer” because it requires the wafer or portion of a wafer to include multiple dies. J.A. 132 (“Thus, Plaintiffs’ construction of wafer does not provide the same meaning as die – the former refers to plural, while the latter refers to singular.”).

Camtek's position:

On appeal, Camtek argues that the district court erred by including the “on any part thereof” phrase in its construction, asserting that such a definition “erroneously permits a single physical wafer to have an arbitrary number of notional ‘wafers’ within it.” Appellant’s Br. 23. Camtek argues that wafers are physically distinct substrates that are inspected by the claimed invention, and that a plurality of wafers means more than one physically discrete wafer. Camtek asserts that the partial wafers, such as sawn wafers and broken wafers as recited in the preambles, are physi- cally distinct substrates. Camtek also points to the ’298 patent’s specification at column 8, lines 60-64, which it asserts discusses wafers as discrete physical objects that are physically handled.

The court noted in footnote 2:

Although the question of whether a wafer can also be a plurality of wafers has been a centerpiece of this appeal, it was at most a peripheral issue before the district court. In fact, it was not clearly raised during the Markman hearing. Certainly Camtek could have more clearly explained to the district court the implications of August Tech’s “or any part thereof” language.

The analysis by the CAFC:

To determine the meaning of the plurality of wafers limitations we begin with the language of the claim itself. In the claims’ preambles, the inventors listed example “wafers” such as whole wafers, sawn and broken wafers, and dies. Nothing in the preamble compels us to conclude that wafers are not discrete objects. The claim itself, however, distinguishes between a single wafer and multiple wafers: (...)

Merck v. Teva was cited; Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).

The fact that the claims at issue cover only the latter – a plurality of known good wafers – is little cause for concern. “The mere fact that there is an alternative embodiment disclosed in the [asserted patent] that is not encompassed by [our] claim construction does not outweigh the language of the claim, especially when the court’s construction is supported by the intrinsic evidence.” TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008). This is especially true where, as here, other unasserted claims in the parent patent cover the excluded embodiments. See PSN Ill., LLC v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166 (Fed. Cir. 2008) (“[C]ourts must recog- nize that disclosed embodiments may be within the scope of other allowed but unasserted claims.”). Unasserted claim 10 of the parent patent recites a method of “inspecting a die on a substrate such as a wafer in any form including [the same list of examples],” and comprises the steps of training a model as to a good die by viewing multiple known good dies, and then inspecting unknown quality dies.

The CAFC rejected the claim construction of the district court:

The inventors chose to draft claims directed to training on and inspecting multiple discrete wafers. The district court’s construction is in error so far as it defines a wafer as any portion of a wafer having two or more dies. We construe a wafer as recited in the claims at issue as a thin, discrete slice of semiconductor material with circuitry thereon that is ready for electrical testing having one or more dies. A plurality of wafers means more than one physically distinct wafer.

Because the jury was given a flawed claim construction, the verdict of infringement must be vacated. August Tech also argues that even under this construction, Camtek and its Falcon inspection machine infringe the asserted claims. We decline to make this factual finding in the first instance, and instead remand to the district court for a limited trial on infringement with respect to this claim element.

There was a prosecution history estoppel issue:

“Absent a clear disavowal or contrary definition in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.” Home Diagnostics, Inc. v. Lifescan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004). During prosecution, the inventors twice amended their claims to overcome U.S. Patent No. 4,644,172 (Sandland). As described by the examiner, Sandland dis- closes a start-and-stop system that moves the wafer, stops the wafer to capture a still image, and then moves the wafer again. After the first rejection, the inventors amended the claimed strobing feature from “strobes during inspection” to “strobes based on a velocity of a wafer during inspection,” and explained that Sandland does not teach strobing, but instead provides constant illumination. J.A. 7532, 7598, 7601. The examiner then rejected the inventors’ claims again, and noted that Sandland’s light could be switched on and off by the computer “to [e]nsure that [one lamp] is turned on and [the other lamps] are turned off [when] the image is grabbed.” J.A. 6730.

The CAFC did not find disavowal: Because we see no clear disavowal of strobing according to position, we agree with the district court’s construction of strobing based on velocity – the strobing must be based at least in part on the wafer’s velocity, i.e., on the rate of change of the position of the wafer.

The matter of the "substantial evidence" standard arose in obviousness arguments:

Although Camtek’s arguments are not without merit, there was substantial evidence supporting the jury’s fact- finding given the expert testimony that Moriya does not contemplate strobing a moving wafer to freeze die patterns for the camera as required by the asserted claims. Therefore, we affirm the trial court’s denial of a JMOL and a new trial on this issue.

There was an "on-sale" bar issue:

In particular, Camtek argues that Jury Instruction 23 wrongly instructed the jury that: “In order to be on ‘sale’ the NSX-80 must also have been ready for patenting at the time the alleged offer for sale is made.” J.A. 56.4 Had the jury considered the NSX-80 in combination with the other prior art, it could have found the claims obvious, Camtek contends.

Before determining whether the NSX-80 would have rendered the claims obvious, we first consider whether the device could qualify as 102(b) prior art. Based on Jury Instruction 23, the jury concluded that it does not. Section 102(b) requires that “the invention was . . . on sale in this country” before the critical date. The Supreme Court has explained that the § 102(b) on-sale bar applies when two conditions are met before the critical date: (1) the product is the subject of a commercial offer for sale, and (2) the invention is ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). Disclosure of inventions is one of the primary objectives behind the limited time patent grant. Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262 (1979) (Among the “purposes of the federal patent system” is to “promote[] disclosure of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires.”); Kewanee Oil v. Bicron, 416 U.S. 470, 481 (1974) (“When . . . the information contained in [a patent] is circulated to the general public and those espe- cially skilled in the trade, such additions to the general store of knowledge are of such importance to the public weal that the Federal Government is willing to pay the high price . . . of exclusive use for its disclosure, which disclosure, it is assumed, will stimulate ideas and the eventual development of further significant advances in the art.”);

AND the punchline:

The issue presented in this case is whether the invention must be ready for patenting at the time the alleged offer is made. We conclude that it does not. Under Pfaff, the invention must be ready for patenting prior to the critical date. But to conclude that it must also be ready for patenting at the time of the offer would render the second prong of the Pfaff test superfluous. Our decision in Robotic Vision Sys. v. View Eng’g, Inc., 249 F.3d 1307, 1313 (Fed. Cir. 2001) expressly holds that completion of the invention prior to the critical date pursuant to an offer to sell would create a bar.

AND

Robotic Vision would have to be overturned for us to hold, as the district court did, that the invention must bereadyforpatentingatthetimeoftheofferforsale.5 This we cannot do. While the invention need not be ready for patenting at the time of the offer, consistent with our cases, we hold that there is no offer for sale until such time as the invention is conceived. Pfaff states that the “word ‘inven- tion’ in the Patent Act unquestionably refers to the inven- tor’s conception.” 525 U.S. at 60.

AND

Therefore, we conclude that an invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the inven- tion once he has conceived of it. Before that time, he was merely offering to sell an idea for a product. As our court explained in Sparton Corp. v. United States, 399 F.3d 1321, 1324 (Fed. Cir. 2005): “Under the Claims Court’s analysis, the patented single part release plate was the subject of a commercial offer for sale before it was even conceived. Such a result is illogical.”

The Findings: Four of every five dissertations examined contained examples of word-for-word plagiarism. Ms. Clarke-Pine found no difference between religious and secular schools. When she used a more stringent criterion — five or more copied words — the incidence of unacknowledged borrowing hit 100 percent. There was no way to determine if the copying was intentional or not, but the prevalence made her question whether colleges and universities bore some of the blame.

The Poshard matter at SIU popularized the concept of inadvertent or unintentional plagiarism. Generally, plagiarism is copying without attribution, regardless of intent.

The Ohio University business illustrated that there is much copying in background sections of theses.

Monday, August 22, 2011

Readers of IPBiz may recall the Alison Routman "plagiarism" incident at the University of Virginia: for a paper at Semester at Sea (run by UVa) Alison Routman copied fragments of three sentences from wikipedia, and was forced to "walk the plank" by the University of Virginia. Now, we have an interesting situation involving plagiarism in a Ph.D. thesis granted by UVa, although the plagiarism was uncovered by a different university.

One Bahman Bakhtiari, hired by the University of Utah in 2009, was recently fired by the University of Utah related to plagiarism matters. Part of the plagiarism "package" related to his thesis at the University of Virginia. Utah discovered eight pages of Bakhtiari’s 1984 dissertation at the University of Virginia, which awarded his doctorate, contained passages that had been pulled from five other sources without attribution. [Link: University of Utah fires tenured Bakhtiari for a “pattern of plagiarism” , which post notes that the University of Maine, Bakhtiari's employer before Utah, is doing an investigation. ]

Learning blogs observes that on August 22, 1902, Teddy Roosevelt became the first president to make a public appearance in an automobile. Elsewhere, the post observes that McKinley was the first president to ride in a car, tho apparently not related to a public appearance. And, the post observes that Franklin Roosevelt was the first president to fly in an airplane, in 1943. LBE seems to recall a movie about that one, which featured the pilot.

IPBiz has covered a few OPRA cases in New Jersey. Now we have a new issue. A New Jersey driver's license has magnetic strips with information: The magnetic strip on the back of your driver’s license contains two types of information about you: everything that is on the front of the license — including your height, weight and address — and secret security markings.

The Trentonian noted: In order to offer a layer of protection to those customers, both the Alcoholic Beverage Commission and the Motor Vehicle Commission in New Jersey say they reach out to liquor store operators and restaurateurs to make them aware that while scanning driver’s licenses is not illegal to check age and fraud detection, using collected information is.

And, the gist of the problem in New Jersey:

Only three states have taken this further by prohibiting retention of data from driver’s licenses. New Jersey has no law prohibiting the collection of data, known as warehousing. No guarantees exist that data from your license will not be used for other purposes. Other states, such as California, are considering legislation similar to that adopted by Texas and New Hampshire that will assess penalties for retention of personal data.

Sunday, August 21, 2011

US conglomerate General Electric is seeking permission to build a $1 billion plant for uranium enrichment by laser, a process which has raised proliferation fears, The New York Times said Sunday.
After testing the enrichment process for two years, GE has asked the US government to approve its plans for a massive facility in North Carolina that could produce reactor fuel by the ton, the report said, citing GE officials.

"We are currently optimizing the design," Christopher Monetta, president of Global Laser Enrichment, a subsidiary operated by GE and Japan's Hitachi, said in an interview with the newspaper.

The US Nuclear Regulatory Commission is expected to deliver its decision on whether to issue a commercial license for the complex by next year, the report said.

Uranium enrichment can be used to produce both the fuel for a nuclear reactor and the fissile material for an atomic warhead. New technologies are seen as potentially dangerous as they make it easier to build a bomb.

Tom Drake was at the National Security Agency, and his first job was on 9/11. The NSA eavesdrops on communications of the world. Other person noted "we knew there was a weakness in the system." Better system (thinthread) was proposed for use in January prior to September 11. Lt. Gen. Hayden proposed trailbrazer. See NSA Managers Modified or Supressed Studies on ThinThread and Trailblazer. There was a complaint to the Inspector General. Drake talked about warrantless wiretap. Drake had great concerns. General Counsel of NSA. Baltimore Sun articles on troubles at NSA. Chevon Gorman (reporter): NSA shelved better program that sifted calls. Government Accountability Project defended Drake. Taking classified papers home without permission. Attorney Abby Lowell, one of most experienced lawyers on espionage act noted "Once you have signed a nondisclosure agreement ..." TrailBlazer consumed 1.2 billion and then was cancelled. Hayden talked about failure of TrailBlazer in 2006. Congress revoked NSA's power to manage large projects. 60 Minutes updated its previous story of May --> Drake pled guilty to a misdemeanor. Drake was sentenced to community service.

"60 Minutes" talked about the miners discussing the possibility of suicide by CO poisoning. Jonathan Franklin took "60 Minutes" to a nearby mine. The idea of 69 days here is terrifying. The men voted on every thing. Dinner. Franklin wrote "33 Men". If you die in your sleep, you're going to be breakfast, lunch, and dinner. Day 17: the drill broke through. "Survivor Underground." The oldest miner was Mario Gomez. 19 of the miners have lost their disability payments. One miner: I lose my concentration very quickly.

Morley Safer interviewed Dolan. Dolan; the North American College. Dolan asserted the greatest sex abuse culprits are married men. Reassigning abusers is nothing less than hideous. Safer: the coverup is worse than the crime. Safer noted, since the interview, there was a scandal in Philadelphia. Catholic faith: sense of permanence. Perception of church as shrill scold. Hung up on headline issues. Safer: but the headline issues are where the people are living their lives.

"CBS Sunday Morning" on August 21, 2011

Charles Osgood introduced the stories for August 21, 2011. Yet another worrisome week (weak?) for the stock market. But, it's Main Street that's the focus of the Anthony Mason cover story on Obama's midwest bus tour. Second, Tracy Smith on Ryan Seachrest. Third, Barbra Steisand from Bill Whittaker. Fourth, Bill Geist on "the right moves" in pole dancing. King Statue. Mo Rocca on board games.

News. Chief Prosecutor in Iran: two hikers sentenced to 8 years in prison. A rebel assault on Tripoli. Zawiyah. Obama being kept up on events while he vacations in Martha's Vinyard. Air crash near Resolute Bay, Canada. Air show crash. Striking Verizon workers go back to work on Tuesday. Strauss-Kahn matter. Kardashian wedding. Sales of antiaging creams to go to $114 billion. Weather. Storms in plains and east coast.

Cover story: "Mr. President." Presidential motorade stopped in Minnesota, Iowa, and Illinois, three states Obama carried in the last election. New black armored bus; GroundForce I. Darth Vader quality to the bus. Mason: it's been a scary summer for a lot of people. Obama: if all we're doing is the same posturing...; Obama: remind people of what the expectations are; stop playing the games and get something done. Feature on visit to Atkinson, Illinois on Wednesday. Wyffels hybrids, a seed company. Mason interviewed employees of Wyffels. Mason interviewed Obama in Wyffels warehouse, with an American flag at Obama's right. Thatcher quoted: I can do business with this man. Obama: can Boehner sell his plan to fellow Republicans? Galesburg, Illinois: surprise visit to Silver Streaks football team. When a team doesn't play together, the coach is usually the first person to be fired. Obama: out of necessity, I read a lot of history these days (what they said about Jefferson, Lincoln).
Anthony Mason did not mention that Obama called Wyffels, Waffles.; Obama: Waffles, Wyffels

Almanac. August 21, 1911. Mona Lisa disappeared from the Louvre. Hunt ended in 1913 when Italian tried to sell painting.
Mona Lisa was da Vinci in drag? Visit to US in early 1960s. Movie "The Freshman." Marlon Brando; Matthew Broderick. Mona Lisa has been in special gallery since 2005.

Board games are back, by Mo Rocca. Starting with Candy Land. Gencon at Indianapolis. Rattus. Pandemic. PowerGrid. The Swarm. Settlers of Catan has sold 18 million copies. "I can't bluff a computer; I can't see its eyes." When you do win, you get see the frustration. Mortal Kombat. Angry Birds is now a board game. Scott Nicholson at Syracuse. Ticket to Ride. We can play board games from 100 years ago. Go a Chinese board game. Candy Land designed at the time of polio. Scott hates Monopoly. Piece of Cake: collect most slices of pie. Takes only 15 to 30 minutes. Non-elimination. Learning to be a good loser is important. How can you problem solve this. Uber-competitive. Bezzerwizzer. [The Rocca piece is a recycled story from April 3, 2011]

Sunday Journal from John Blackstone on Iranian hikers. Patrick Clausen on general rule of thumb in US/Iranian relations; people WITH power don't want to deal with US.

Next, was Tracy Smith's Sunday Profile of Ryan Seacrest. Making the rounds at Children's Hospital in Philadelphia. The Voice.
Connie, Gary, and Merida Seacrest. Not my goal to be controversial. Let's be vanilla. I have no problem being considered "just there." Exec producer: keeping up with the Kardashians. Times Square; Oscar night. Born on Christmas Eve, 1974. Started in radio. American Idol in 2002. Seacrest is an investor in several restaurants. I like to order where you don't have to commit. The more bites the more fun. Julianne Huff. Running jokes about his height. Gay jokes. Loves to be busy.

Next was the piece on King (August 28, 1963), by Rita Braver. Statue, 27 years in the making. Will be first memorial on Mall dedicated to a man not a president. Harry Johnson. Alpha Phi Alpha, fraternity at Boston University. Project had to be approved by Congress. 4 acre site near the Tidal Basin. In 1999, design competition with over 900 entries. Roma Design Group from San Francisco. Third section, stone of hope, 28 feet tall. Sculpture of King done in China. Unyielding man of courage. Some critics say: King looks too stern. Dr. King: judge by content of his character. "I have the audacity to believe; Injustice anywhere " The "King font" was invented. Address is 1964 Independence Avenue. The Foundation needed to raise $120 million. King Family charged $800,000 for IP rights to license the name; words. Opening is set for 48th anniversary of speech, which will be next Sunday (August 28, 2011)

The song "That Face," from Streisand's album coming out next Tuesday. Has sold more than 140 million albums. Interview with Bill Whitaker. I never sing in the shower. Barbra wanted to be an actress. I became a singer because I couldn't get work as an actress. Now, an album based on Allan and Marilyn Bergman songs. Met Streisand in early 1960s. My name is Barbara. They have been friends and collaborators. The windmills of your mind. Poppa, can you hear me? Her reputation for being somewhat controlling. Clip from Mike Wallace interview: you would love to control this piece. The color of peach. Malibu Estate. Fragrant Cloud rose. Earned two Oscars, 8 Grammys. Her creativity comes in spurts. What are you doing the rest of your life. I strive for excellence. I'm grateful to my mother's comments. I could record for years to come. Write much more. I ain't over till it's over.
Of Streisand, note preview on August 19, 2011.

Talking treason with Ben Stein. Rick Perry's arguments. Lake Ponderay in North Idaho. Stein shocked. Something akin to treason: print more money. A lesson in economics. One of measures: increase money supply. Not a treasonous move. Make money cheaper, so businesses will invest. Stein says: Perry needs lessons in moderation and economics, soon.

Bill Geist's piece on pole dancing is recycled from May 1, 2011. Pole dancing is becoming bipolar. A new trend to dress it up and bring it into the mainstream. Championship in New York City. Soccer moms in New Jersey. Exotic Dance Workshops. 973-886 - 6171 (right in central New Jersey). An innovative performance artist. Peter Norton: SymphonySpace.

Moment of nature. Big horn sheep in Montana's Glacier National Park. (recycled from December 26, 2010!?)

Note In re Shaker A. Mousa. This relates to application 10/667,216, and appears to be an appeal from an adverse BPAI decision. Of the BPAI decision, the subject matter of the application is directed to oxidized, supersulfated heparin fractions. Some rejections are under 102(b), but do include an invocation of inherent properties. There is a reference to In re Prater as to broadest reasonable interpretation ["BRI"]. Furthermore, there is citation in the BPAI decision to In re Best, 562 F2d 1252, as to shifting the burden to applicant to demonstrate differences from the prior art. Thus, the CAFC in addressing this appeal may give further structure to In re Best burden shifting.

As to an issued patent with Mousa as an inventor, note US 7,964,338, titled Platelet preservation composition containing eptifibatide, a reversible factor IIa inhibitor and a hemoglobin oxygen carrier. This is one of 20 issued US patents which comes up in a search for Shaker Mousa.

Friday, August 19, 2011

"Plagiarism — holding out the work of another as one’s own — strikes at the very core of academic integrity. In my view, the sanctions proposed by the CHC do not recognize the seriousness of this offense," interim president Lorris Betz wrote in a June 30 decision. "The only appropriate sanction in this case is dismissal, which is necessary to preserve the academic integrity of the institution and to restore public confidence in the university."

Within a post titled When Silicon Valley fights, patents are the deadliest weapon , one finds the text:

One single smartphone -- like an iPhone or an Samsung's best-selling Galaxy S II, an Android-based phone -- can involve as many as 250,000 patent claims, according to Google.

And, patents can outsurvive the underlying people:

By contrast, the Nortel patents were particularly valuable because they lacked licensing commitments: Nortel's previous business agreements got cleared away in its bankruptcy. (In advance of the Nortel auction, Microsoft claimed its own Nortel licenses should survive any ownership transfer on the patents. It's a legal gray area, and a point that became moot when Microsoft became one of the winning bidders.)
All of this means that for the moment, patents are the tech industry's unobtainium: an incredibly valuable resource companies will throw around mind-boggling sums to control.
Kodak and InterDigital spent decades building multi-billion-dollar businesses with thousands of employees and lots of tangible, real-world assets. But in the end, their most valuable possession may be the stacks of paper they control in the U.S. Patent Office's filing cabinets.

Wednesday, August 17, 2011

Plaintiff-appellant CyberSource Corporation (“Cyber- Source”) appeals from a decision of the United States District Court for the Northern District of California. The district court granted summary judgment of invalidity of claims 2 and 3 of U.S. Patent No. 6,029,154 (“’154 patent”) under 35 U.S.C. § 101 for failure to recite patent-eligible subject matter. See CyberSource Corp. v. Retail Decisions, Inc., 620 F. Supp. 2d 1068 (N.D. Cal. 2009). We affirm.

AND

The district court found that claim 3 fails to meet ei- ther prong of the machine-or-transformation test. Cyber- Source, 620 F. Supp. 2d at 1078. We agree.

It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algo- rithms are disclosed in the ’154 patent’s specification. Rather, the broad scope of claim 3 extends to essentially any method of detecting credit card fraud based on infor- mation relating past transactions to a particular “Internet address,” even methods that can be performed in the human mind.

Separately, a Beauregard claim—named after In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)—is a claim to a computer readable medium (e.g., a disk, hard drive, or other data storage device) containing program instructions for a computer to per- form a particular process.

CyberSource’s main argument is that coupling the unpatentable mental process recited in claim 3 with a manufacture or machine renders it patent- eligible.

AND

Cyber- Source contends that, by definition, a tangible, man-made article of manufacture such as a “computer readable medium containing program instructions” cannot possibly fall within any of the three patent-eligibility exceptions the Supreme Court has recognized for “laws of nature, physical phenomena, [or] abstract ideas.” Appellant’s Br. 47–48 (quoting Bilski, 130 S. Ct. at 3225). We disagree.

AND

In the present case, CyberSource has not met its burden to demonstrate that claim 2 is “truly drawn to a specific” computer readable medium, rather than to the underlying method of credit card fraud detection.

AND

As we stated in Bilski, to impart patent- eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine “must impose meaningful limits on the claim’s scope.” 545 F.3d at 961. In other words, the machine “must play a significant part in permitting the claimed method to be performed.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Here, the incidental use of a computer to perform the mental process of claim 3 does not impose a sufficiently meaningful limit on the claim’s scope. As such, the “computer readable medium” limitation of claim 2 does not make the otherwise unpatentable method patent- eligible under § 101. See Grams, 888 F.2d at 840–41 (after finding claims unpatentable for being drawn to a mental process, the court found that claim 16’s require- ment “that the [same] method be performed with a pro- grammed computer” did not alter the method’s unpatentability under § 101). Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in pro- gram instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.

That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson. As discussed above, the Supreme Court found in Benson that a claim to a method of programming a general-purpose computer to convert BCD numbers into pure binary was unpatentable because the conversion of BCD numerals to pure binary numerals “can be done mentally,” 409 U.S. at 65–67, and because the process was “so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion,” id. at 71.

BUT

This is entirely unlike cases where, as a practical matter, the use of a computer is required to perform the claimed method. For example, in SiRF Tech., we found that claims to a “method for calculating an absolute position of a GPS receiver and an absolute time of recep- tion of satellite signals” recited patent-eligible subject matter. 601 F.3d at 1331. The court noted that we were “not dealing with . . . a method that [could] be performed without a machine” and that there was “no evidence . . . that the calculations [could] be performed entirely in the human mind.” Id. at 1333. To the contrary, we found it was “clear that the methods at issue could not be per- formed without the use of a GPS receiver.” Id. at 1332.

Similarly, in Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), we upheld the patentability of a claimed method “for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” Id. at 868. Because the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two- dimensional array known as a mask) and the output of a modified computer data structure (a halftoned digital image), the method could not, as a practical matter, be performed entirely in a human’s mind.

In contrast, it is clear in the present case that one could mentally perform the fraud detection method that underlies both claims 2 and 3 of the ’154 patent, as the method consists of only the general approach of obtaining information about credit card transactions utilizing an Internet address and then using that information in some undefined manner to determine if the credit card transac- tion is valid. Because claims 2 and 3 attempt to capture unpatentable mental processes (i.e., abstract ideas), they are invalid under § 101.

Tuesday, August 16, 2011

Google’s move may prompt Apple, Samsung or Microsoft to go after RIM for its intellectual property, Misek said.
“Apple has to respond, in my view, and to bulk up its patents a little more,” Misek said in an interview. “They have cash. There has to be a response. So do Microsoft and Samsung.”

The Patent Office is in the Dept of Commerce, once headed by Gary Locke. who went on to become the first Chinese-American ambassador to China. Being ambassador is a big deal, especially when you buy your own coffee.

Over a difference of opinion regarding the future of certain projects, Devol resigned from Auto Ordinance and joined RCA. After a short stint as eastern sales manager of electronics products, which he felt "wasn't his ball of wax", Devol left RCA to develop ideas which eventually led to the patent application for the first industrial robot. [leading to US 2,988,237 ]

The whole wikipedia entry is of relevance to patent attorneys.

In passing, tho Popular Mechanics credits someone else for microwave ovens, wikipedia notes: Devol was part of the team that developed the first commercial use of microwave oven technology, the Speedy Weeny, which automatically cooked and dispensed hotdogs in places such as Grand Central Terminal.

**Separately, U.S. Sen. Tom Udall was at New Mexico State University on August 9, 2011 to announce plans for legislation that will mandate parity for algae and other non-cellulosic advanced biofuels, in terms of production requirements and subsidies under the renewable fuel standards. Also present at NMSU was Denise Gitsham, director of corporate affairs and legislative counsel for Sapphire Energy, Inc., owner of a large biorefinery in Columbus, N.M. NMSU itself recently moved into algae bio-oil production mode with a new 4,000-liter Solix BioSystems algal photobioreactor, which joined four smaller algae "raceways" at the Fabian Garcia Science Center in Las Cruces.

Pete Lammers is an NMSU research professor and the technical director of the university's Algal Bioenergy Program.

**Separately, BiofuelsDigest is promoting bracket-mania in biofuels:

“Now its up to the readers to sort out perception from reality,” commented Biofuels Digest editor Jim Lane. “This competition is not about what a well-placed investor would like you to think. It’s about what you think – your chance to have a say about the technologies.

Crowd-sourcing at its best? How about the two patent infringement suits brought by Butamax against Gevo? Do the readers (or investors) care about patents?

**Elsewhere on the green scene:

Evergreen — hurt by lower-cost competition in China and plummeting prices for solar panels — also said it will cut more jobs — 65 layoffs in the United States and Europe, mostly through the shutdown of its Midland, Mich., manufacturing facility. That would leave Evergreen with about 68 workers according to a head count listed in the bankruptcy filing.

To cut costs, Evergreen shifted some of its production to Wuhan, China, last year. That joint venture will remain operating subject to financing talks with Chinese investors.

Sunday, August 14, 2011

CBS Sunday Morning on August 14, 2011

Charles Osgood introduced the stories. As summer enters its final innings, and people are leaving their summer jobs, the matter of unpaid internship is explored by Tracey Smith in the cover story. "A foot in the door?" Second, a story on suntans, "burning questions." Third, "Iron Mike" done by Bill Whittaker. (recycled story?) Fourth, Bill Geist on "Unhappy Campers." (recycled story?)

Headlines. Race to Republican nomination. Rick Perry. Michelle Bachmann. Free barbecue and live music in Iowa. Pawlenty dropped out of the race. Stage collapse at Indiana State Fair. Attack in Afghanistan. Missing blimp in Ohio. Weather: stormy on east coast. [Update on missing blimp: Ohioan, 94, wakes up to blimp that landed in yard : The 128-foot-long blimp broke free of its moorings at a Columbus airport during strong winds early Sunday [14 Aug 2011], then drifted to the sky, headed eastward and landed in Lillian Bernhagen's backyard in Worthington, less than two miles from Ohio State University's Don Scott airfield.]

Tracey Smith started with colonial Williamsburg, mentioning over 100 historical interpretation interns. The interns don't get paid. Jay Gainer is director of historic trades at Williamsburg. Internships are a trend. Loren Berger talked her way into 15 internships. Intern Queen Inc. 2010 survey results: 42% with internships got job, vs. 30% getting jobs without internships AND a difference in salary: 42K (previous internship) vs. 35K salary (no previous internship). In NYC, Loren Burger threw a party for interns. Sunday Morning interns covered the party. A finding: people are upset that interns not getting paid. Eisenbray: Economic Policy Institute. Unpaid interns take jobs away from people who would be paid. Top big city internships are taken by children of richer people. Upper middle class kids. Erica Mahoney, and the 75 other CBS interns, get $50 per week. What's wrong with working for free? It degrades the value of work. But, in this economy, some people would rather work for free, than not work at all. Knoxville Ice Bears. Think big, but start from the bottom. "A three month job interview." For the benefit of immediate enlightenment.

Brit Marling from Anthony Mason. Movie: Another Earth, which imagines the discovery of another planet. Earth 2. The movie won a major award at Sundance. Georgetown University. 2005. Interned at Goldman Sachs, who offered her a job. Made a documentary in Cuba. Mike Cahill of New Haven. Broke in to a ski resort for scene with snow.

Fast draw. Unemployment high; wages low. Corporate America, 1.2 trillion dollars in cash piled up. Steven Neil Kaplan of U of Chicago. Companies are not spending; the cash is just sitting there. Give every family in America, $10,000. BUT, there is so much uncertainty, the companies don't invest.

John Cusack in Say Anything started story on boom boxes (recycled story). Boxes introduced in late 1970s. Fab Five Freddie. The Message by Grandmaster Flash. Book: The Boombox Project. Startrek IV criticized boomboxes. The boombox was on the wrong side of history.

Mike Tyson.

Bill Geist. Camp Meadowlark in Maine.

Mail: Nancy and Warren Edwards of Utah, have written CBS Sunday Morning for over 20 years.

Next week. Barbra Streisand.

Moment of nature. HandiHaler. Great Swamp National Wildlife Refuge near Basking Ridge, New Jersey. Given the torrential rain in NJ on August 14, we know that the clip was recorded on another day. [ The Great Swamp National Wildlife Refuge (NWR) is one of 553 refuges in the National Wildlife Refuge System that is administered by the Department of the Interior's U.S. Fish and Wildlife Service. See http://www.fws.gov/northeast/greatswamp/]

Maybe the word is “urbane”. I never saw him badger a lawyer. He never took advantage of his position, looking down at counsel, who can’t answer back.

In bearing and temperament he was made to be a judge. He always listened, and I never saw him show impatience or inattention. He would draw out his colleagues, even as he had the knowledge and confidence of vast experience.

In every way, he will be missed. Dan Friedman’s life was a life of service. He served the law and the nation with a wisdom that’s rare, even among judges. It was a joy to be in his company. We remember his kindness and his smile – and his scholarship, his balance, his sensitivity.

We mourn the loss of our dear colleague, and the nation’s loss of a powerful intellect. He moves to the memory of history.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.